Two Moms and a Toy, LLC v. International Playthings, LLC

Filing 268

ORDER. Defendant's Motion to Strike Declaration of Linda Austin and Plaintiff's response to Defendant's Supplemental Motion for Summary Judgment on its Counterclaim for Invalidity 199 is GRANTED in part and DENIED in part. The Declaration of Co-Inventor Linda Austin [191-1] is STRICKEN as indicated in the attached Order. By Judge Philip A. Brimmer on 10/19/12.(pabsec)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Philip A. Brimmer
Civil Action No. 10-cv-02271-PAB-BNB
TWO MOMS AND A TOY, LLC, a Colorado limited liability company,
Plaintiff,
v.
INTERNATIONAL PLAYTHINGS, LLC, a Delaware limited liability company,
GOLOS WEISMAN DESIGN, LTD., an Israel partnership; and
YOOKIDOO, LTD., an Israel partnership,
Defendants.

ORDER

This matter is before the Court on the Motion to Strike [Docket No. 199] filed by
defendant International Playthings, LLC (“IPT”). The motion is fully briefed and ripe for
disposition.
On February 24, 2012, IPT filed a supplemental motion for summary judgment
[Docket No. 167] seeking an order from the Court that United States Patent No.
6,782,567 (the “’567 patent”) is invalid because several of its claims are anticipated and
obvious in light of the prior art. See generally Docket No. 167. On March 22, 2012,
plaintiff Two Moms and a Toy, LLC (“Two Moms”) filed a brief in opposition [Docket No.
191] to IPT’s summary judgment motion. In support of its brief in opposition, Two
Moms provided a declaration from Linda Austin, co-inventor of the ’567 patent.1 See

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The ’567 patent was applied for by and issued to inventors Linda Austin and
Anne Argent, who assigned the patent to Two Moms. Docket No. 119 at 5-6, ¶ 10.

Docket No. 191-1. Two Moms submitted Ms. Austin’s declaration pursuant to Fed. R.
Evid. 701 as lay witness opinion because she is not disclosed as an expert in this case.
Docket No. 191-1 at 1, ¶ 1.
In its motion, IPT requests that the Court strike Ms. Austin’s declaration, arguing
that it is inadmissible under Rule 701 because it contains opinions based on specialized
or technical knowledge. Docket No. 199 at 4-5. IPT claims that Ms. Austin’s
declaration impermissibly compares elements found in the prior art to the claims and
specifications contained in the ’567 patent. Id. at 4. IPT therefore objects to any
aspect of Ms. Austin’s declaration that compares the prior art to the ’567 patent as well
as any opinions presented in the declaration rebutting IPT’s expert report.2 Id. at 4.
IPT contends that the Court should strike Ms. Austin’s declaration because she was not

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IPT identifies some examples of Ms. Austin’s improper opinions as:

¶2; the “fountain apparatus described in the [United States Patent No.
5,918,809 (the “’809 patent”)] is not a toy”;
¶ 3: the ’809 patent fails to disclose a “character which is removably
mounted over a spout” because the prior art ’809 patent only teaches that
the stemmed flower characters are “‘fitted’ to the exit apertures of dual
entry nozzles mounted on the base 20G”;
¶ 4 & 5: The ’809 patent fails to disclose a “removable mounting that
would prevent water from lifting the sleeves off the nozzle and yet still
enable the sleeves to be easily removed” and that there is “no discussion
in the ’809 patent as to whether the fitting of the sleeves to the exit
apertures of the nozzles is removable”; and
¶ 6: “while the stem-like sleeves of Fig. 17 of the ’809 fountain apparatus
are characters as described in the ’567 patent they are not part of the
‘themed amusement assembly’ as claimed in claim 1 of the ’567 patent.”
Docket No. 219 at 8.
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disclosed as an expert pursuant to Rule 26(a)(2) of the Federal Rules of Civil
Procedure. In addition, IPT requests that the Court strike Two Moms’ response to IPT’s
motion for summary judgment because it relies primarily on Ms. Austin’s declaration .
Id. at 6.
A summary judgment affidavit may not contain expert testimony unless the
affiant has first been designated as an expert witness under Fed. R. Civ. P. 26(a)(2).
Bryant v. Farmers Ins. Exch., 432 F.3d 1114, 1123 (10th Cir. 2005). Any non-expert
testimony in the form of opinions or inferences must be “(a) rationally based on the
witness’s perception; (b) helpful to clearly understanding the witness’s testimony or to
determining a fact in issue; and (c) not based on scientific, technical, or other
specialized knowledge.” Fed R. Evid. 701. The Tenth Circuit has held that testimony
provided by a witness is expert testimony if the testimony is “based on technical or
specialized knowledge,” regardless of whether the witness is designated as an expert or
fact witness. James River Ins. Co. v. Rapid Funding, LLC, 658 F.3d 1207, 1214 (10th
Cir. 2011).
Generally, under Rule 701, an inventor may present testimony explaining his or
her invention and what he or she intended to convey by the specifications and the
claims contained therein. The Braun Corp. v. Maxon Lift Corp., 282 F. Supp. 2d 931,
934 (N.D. Ind. 2003); Myers v. Master Lock Co., No. 06-cv-00619-LTB, 2008 WL
2168977, at *9 (D. Colo. May 22, 2008). This testimony is proper because an inventor
relies on his personal knowledge when providing a description of his claimed invention.
Braun Corp., 282 F. Supp. 2d at 934 (allowing inventor of wheelchair lift to testify under

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Rule 701 because he was involved in the wheelchair field for over sixteen years and
had personal knowledge of his patented invention); Myers, 2008 WL 2168977, at *9
(allowing Philip Wyers’ declaration because it is based on his personal knowledge of his
own locks and the business of Wyers Products Group, Inc.). However, under Rule 701,
an inventor cannot present testimony comparing or analyzing the prior art to his or her
invention. See Gart v. Logitech, Inc., 254 F. Supp. 2d 1119, 1123 (C.D. Cal. 2003)
(finding that inventors can give testimony about the nature of the prior art, but cannot
compare the prior art to the patent at issue because such testimony requires
specialized knowledge). An inventor cannot provide a comparative analysis because
the inventor does not have personal knowledge of what the claims and specifications
contained in the prior art intended to convey, and thus any comparison necessarily
relies on a certain degree of technical or specialized knowledge. Id. In Sundance, Inc.
v. DeMonte Fabricating Ltd., 550 F.3d 1356 (Fed. Cir. 2008), the Federal Circuit held
that only a person of ordinary skill in the art who is qualified as a technical expert under
Rule 702 may offer expert testimony on technical matters. Id. at 1363. The Federal
Circuit noted that, “where an issue calls for consideration of evidence from the
perspective of one of ordinary skill in the art, it is contradictory to Rule 702 to allow a
witness to testify on the issue who is not qualified as a technical expert in that art.” Id.
In its response, Two Moms attempts to draw a distinction between an expert
witness and an inventor of ordinary skill in the field. Docket No. 216 at 3; see also
Docket No. 191-1 at 1, ¶ 1 (Ms. Austin’s opinions are “offered pursuant to Fed. R. Evid.
701 as an inventor of the ’567 patent and as a person of ordinary skill in the art, not as

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an expert”). Two Moms claims that Ms. Austin “doesn’t have any professional
experience in toys or toy design,” the “’567 patent is her first and only toy invention,”
she has not “previously worked in the toy industry in any capacity,” and therefore her
declaration does not present expert evidence. Docket No. 216 at 3, ¶ 3. Furthermore,
Two Moms argues that Ms. Austin’s declaration only identifies the differences between
her invention and what is disclosed in the prior art and that her declaration does not
opine on obviousness. Id. at 4. Two Moms’ argument misses the mark.
Here, it is undisputed that, as an inventor, Ms. Austin qualifies as a person of
ordinary skill in the relevant art. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
2005) (en banc) (referring to the “well-settled understanding that inventors are typically
persons skilled in the field of the invention”); CSS Fitness, Inc. v. Brunswick Corp., 288
F.3d 1359, 1368 (Fed. Cir. 2002) (explaining that the inventor is “presumably also an
artisan of ordinary skill in the art” for purposes of comparing expert testimony).
However, as noted above, qualifying as a person of ordinary skill in the art does not
necessarily allow an inventor to provide testimony about all the issues related to the
case. See Sundance, 550 F.3d at 1363 (only a person of ordinary skill in the art who is
qualified as a technical expert under Rule 702 may offer expert testimony on technical
matters). On the contrary, qualifying as a person of ordinary skill in the art is only a
condition precedent to providing expert testimony with respect to technical matters in
the case. See id. (noting that “being a person of ordinary skill in the art [does not]
automatically entitle[ ] a witness to testify as an expert . . .[however, there is no
suggestion] that Rule 702 requires a witness to possess something more than ordinary
skill in the art to testify as an expert”). Thus, although Ms. Austin could ultimately
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qualify as an expert witness, Two Moms’ failure to disclose Ms. Austin as an expert
pursuant to Rule 26(a)(2) limits the scope of the testimony she may provide.3
To the extent Two Moms argues that Ms. Austin’s comparative analysis does not
rely on “technical or specialized knowledge” because the level of skill necessary to
understand the prior art is relatively low, the Court disagrees. Docket No. 216 at 4-5.
For the purposes of this motion, the Court finds that a person of ordinary skill in the art
is one who has experience in designing toys and who has at least a rudimentary
knowledge of mechanical and battery-powered components used for the design of toys.
See Docket No. 48 at 15. Although this level of skill is not particularly high, the Court
nonetheless finds that this level of skill requires knowledge that is not common to the
average lay person. Byrne v. Wood, 450 F. App’x 956, 964 (Fed. Cir. 2011) (noting that
court must identify the level of ordinary skill in the art when ruling on a motion to strike
an affidavit). Therefore, because a comparative analysis of claim terms found in the
prior art to those contained in the ’567 patent includes technical knowledge of
mechanical and battery-powered components used for the design of toys – i.e., subject
matter not obvious to a layperson – this opinion must be provided by a disclosed expert.
Upon review of Ms. Austin’s declaration, the Court finds that her declaration is

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Two Moms argues that Ms. Austin’s declaration is similar to that found
admissible in Myers v. Master Lock Co., No. 06-cv-00619-LTB, 2008 WL 2168977 (D.
Colo. May 22, 2008). The Court disagrees. In Myers, the court actually recognized that
Philip Wyers’ proposed declaration “improperly opine[d] on whether one skilled in the
art of lock making would have found his improvements to be obvious”; however, the
court allowed Mr. Wyers’ declaration because his “declaration primarily address[ed] his
personal experience and knowledge as a manufacturer of trailer barbell locks.” 2008
WL 2168977, at *9. As noted above, Ms. Austin does not claim any extensive
experience in the toymaking field. Docket No. 216 at 3.
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inadmissible under Rule 701 because it contains opinions not rationally based on Ms.
Austin’s perception, but rather are based on her “technical, or other specialized
knowledge” acquired as a person of ordinary skill in the field. Fed. R. Evid. 701(c);
James River, 658 F.3d at 1214.
Pursuant to Rule 26, a party must disclose the identity of any witness it may use
at trial to present evidence under Federal Rule of Evidence 702. See Fed. R. Civ. P.
26(a). When a party fails to comply with Rule 26(a)’s disclosure requirements, that
party is not “allowed to introduce the expert witness’s testimony.” See Ciomber v.
Coop. Plus, Inc., 527 F.3d 635, 641 (7th Cir. 2008) (quoting Fed. R. Civ. P. 37(c)(1));
Sims v. Great Am. Life Ins. Co., 469 F.3d 870, 894-95 (10th Cir. 2006). This
exclusionary sanction is mandatory unless the failure to disclose was substantially
justified or harmless or unless the Court finds some other sanction to be more
appropriate.4 Fed. R. Civ. P. 37(c)(1); Asher v. Colgate-Palmolive Co., 278 F.R.D. 608,
613 (D. Colo. 2011). Because Two Moms did not disclose Ms. Austin as an expert
witness, the Court will strike her declaration from the summary judgment record

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The Tenth Circuit has enumerated four factors the Court should use to guide its
discretion in determining whether a Fed. R. Civ. P. 26(a) violation is substantially
justified or harmless: (1) the prejudice or surprise to the party against whom the
testimony is offered; (2) the ability of a party to cure prejudice; (3) the extent to which
introducing such testimony would disrupt the trial; and (4) the moving party’s bad faith
or willfulness. Woodworker’s Supply, Inc. v. Principal Mut. Life Ins. Co., 170 F.3d 985,
993 (10th Cir. 1999). The non-moving party has the burden of showing that they were
substantially justified in failing to comply with Rule 26(a)(1). Sender v. Mann, 225
F.R.D. 645, 655 (D. Colo. 2004). Two Moms has not argued that its failure to comply
with Rule 26 was justified or harmless. See Docket No. 216 at 7-8. Therefore, the
Court finds that Two Moms’ delayed disclosure in this case is not substantially justified
or harmless.
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pursuant to Fed. R. Civ. P. 37(c)(1). The Court, however, will not strike Two Moms’
brief in opposition to the motion for summary judgment [Docket No. 191].
For the foregoing reasons, it is
ORDERED that Defendant’s Motion to Strike Declaration of Linda Austin and
Plaintiff’s response to Defendant’s Supplemental Motion for Summary Judgment on its
Counterclaim for Invalidity is GRANTED in part and DENIED in part. It is further
ORDERED that the Declaration of Co-Inventor Linda Austin [Docket No. 191-1]
will be stricken as indicated in this Order.

DATED October 19, 2012.
BY THE COURT:

s/Philip A. Brimmer
PHILIP A. BRIMMER
United States District Judge

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